Diners Club International Ltd. v. CCG
Claim Number: FA0709001074819
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <directdinersclub.com>, <discountdinerscard.com>, <usdiscountdinersclub.com>, <usdinersdiscountclub.com>, < dinersdiscounts.com>, and <dinersdiscounts.net>, registered with GoDaddy.com, Inc., and <usdinersclubcard.com>, registered with Network Solutions, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 5, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 7, 2007.
On September 6, 2007, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <directdinersclub.com>, <discountdinerscard.com>, <usdiscountdinersclub.com>, and <usdinersdiscountclub.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. On September 12, 2007, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <dinersdiscounts.com> and <dinersdiscounts.net> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 7, 2007, Network Solutions, Inc., confirmed by e-mail to the National Arbitration Forum that the <usdinersclubcard.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 17, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 9, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@usdinersclubcard.com, postmaster@directdinersclub.com, postmaster@discountdinerscard.com, postmaster@usdiscountdinersclub.com, postmaster@usdinersdiscountclub.com, postmaster@dinersdiscounts.com, and postmaster@dinersdiscounts.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 15, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a leading provider of credit card and other financial services to individuals, small businesses, and corporate enterprises throughout the world.
Complainant has used the DINERS and DINERS CLUB marks in connection with its business for more than fifty years, and the marks have gained widespread recognition and goodwill from the consuming public.
Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for both the DINERS service mark (Reg. No. 1,462,209, issued October 20, 1987) and the DINERS CLUB service mark (Reg. No. 828,013, issued April 25, 1967).
Complainant has not given Respondent permission to use its DINERS or DINERS CLUB marks for any purpose.
Respondent is not commonly known by any of the disputed domain names
Respondent registered the disputed domain names on the dates hereafter indicated: <usdinersclubcard.com> on July 8, 2007; <usdinersdiscountclub.com>, <usdiscountdinersclub.com>, <discountdinerscard.com>, and <directdnersclub.com> on August 9, 2007; and <dinersdiscounts.com> and <dinersdiscounts.net> on August 21, 2007.
Each of Respondent’s disputed domain names resolves to a website that features hyperlinks to third-party websites, most of which offer credit card and other financial services in direct competition with the business of Complainant.
Respondent’s domain names are confusingly similar to Complainant’s DINERS and DINERS CLUB marks.
Respondent does not have any rights or legitimate interests in the subject domain names.
Respondent registered and uses these domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names were registered and are being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant asserts its rights in the DINERS and DINERS CLUB marks by virtue of its registration of the marks with the USPTO. Such registration is sufficient to establish Complainant’s rights in the marks pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”
Respondent’s domain names are all confusingly similar to
Complainant’s DINERS and DINERS CLUB marks.
The <discountdinerscard.com>, <dinersdiscounts.com>,
and <dinersdiscounts.net> domain names fully incorporate
Complainant’s DINERS mark and merely add the generic terms “discount,” “discounts,”
and “card”. In the same way, the <usdinersclubcard.com>,
<directdinersclub.com>, <usdiscountdinersclub.com>,
and <usdinersdiscountclub.com> domain names incorporate
Complainant’s DINERS CLUB mark and merely add the generic terms “us,” “card,”
and “discount”. Previous panels have
found that the addition of generic terms such as these does not negate
confusing similarity between a disputed domain name and a corresponding mark
under Policy ¶ 4(a)(i). See Arthur
Guinness Son & Co. (
Moreover, the domain names also contain the generic top-level domain (“gTLD”) “.com,” except as to the <dinersdiscounts.net> domain name, which contains the gTLD “.net.” Because a top-level domain is a required element of all domain names, the addition of the gTLDs to Respondent’s disputed domain names is irrelvant for purposes of Policy ¶ 4(a)(i). Therefore, we conclude that the disputed domain names are confusingly similar to Complainant’s DINERS and DINERS CLUB marks pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for purposes of determining whether it is identical or confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t
is a well established principle that generic top-level domains are irrelevant
when conducting a Policy ¶ 4(a)(i) analysis.
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain names. Under Policy ¶ 4(a)(ii), once Complainant makes out a prima facie case in support of this assertion, the burden shifts to Respondent to show that it does have right or legitimate interests in the disputed domain names. In the instant case, Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right or legitimate interest in a domain is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists). Respondent’s failure to answer the Complaint raises the presumption that Respondent does not have rights or legitimate interests in the disputed domain names. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to accept
all reasonable allegations set forth…as true.
To the same effect, see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002). Nevertheless, we will evaluate the evidence in the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests in the disputed domains pursuant to Policy ¶ 4(c).
In this connection, we first note that it is undisputed that
Respondent’s domain names resolve to websites featuring hyperlinks to
third-party websites, most of which are in direct competition with the business
of Complainant. We are entitled to presume that Respondent accrues
click-through revenue when Internet users access these links. This indicates Respondent’s lack of rights
and legitimate interests in the disputed domain names because such use
constitutes neither a bona fide offering
of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). See Disney
Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003)
(finding that a respondent’s diversionary use of a complainant’s mark to
attract Internet users to its own website, which contained hyperlinks to
unrelated websites, was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the disputed domain
names); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a
respondent was not using domain names for a bona fide offering of goods
or services nor a legitimate noncommercial or fair use because that respondent
used the names to divert Internet users to a website that offered services that
competed with those offered by a complainant under its marks).
In addition, Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by any of the disputed domain names, which indicates a lack of rights and legitimate interests under Policy ¶ 4(c)(ii). Indeed, Respondent’s WHOIS information indicates that Respondent is “CCG”, and there is nothing further in the record to suggest that Respondent is known by the disputed domain names. Thus, we conclude that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply).
Moreover, it is uncontroverted on this record that Complainant has not given Respondent permission to use its DINERS or DINERS CLUB marks for any purpose. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests in a disputed domain name where (1) a respondent is not a licensee of a complainant; (2) that complainant’s prior rights in the domain name precede that respondent’s registration; (3) that respondent is not commonly known by the domain name in question).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges, and Respondent does not deny, that
Respondent registered and is using the domain names here in issue in bad faith
pursuant to Policy ¶ 4(a)(iii). As was mentioned previously, we presume that
Respondent benefits commercially when Internet users seeking Complainant’s
services click on the hyperlinks contained on the websites that resolve from
the disputed domain names. Inasmuch as
the disputed domain names are confusingly similar to Complainant’s DINERS and
DINERS CLUB marks, Respondent is therefore capitalizing on the likelihood that
these users will be confused as to Complainant’s possible affiliation with or
sponsorship of the disputed domain names.
This is evidence of Respondent’s bad faith registration and use under
Policy ¶ 4(b)(iv).
See Amazon.com, Inc. v.
Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003):
As Respondent is using the domain name at issue in direct
competition with Complainant, and giving the impression of being affiliated
with or sponsored by Complainant, this circumstance qualifies as bad faith
registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).
See also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where a respondent's use of a domain name to resolve to a website where similar services are offered to Internet users is likely to confuse users into believing that a complainant is the source of or is sponsoring the services offered at the site).
In addition, it appears that Respondent registered the
contested domain names with at least
constructive knowledge of Complainant’s rights in the DINERS and DINERS
CLUB service marks by virtue of Complainant’s
prior registration of those marks with the United States Patent and Trademark
Office. Registration of a confusingly
similar domain name despite such constructive knowledge is, without more,
evidence of bad faith registration and use of the domain name pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct.
4, 2002).
The Panel thus finds that Policy ¶ 4(a)(iii)
has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <usdinersclubcard.com>, <directdinersclub.com>, <discountdinerscard.com>, <usdiscountdinersclub.com>, <dinersdiscounts.com>, <usdinersdiscountclub.com> and <dinersdiscounts.net> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 24, 2007
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